DECISION

Winchester Properties, LLC v DefaultData.com

Claim Number: FA0104000097114

PARTIES

Complainant is Winchester Properties, LLC, Meadow Vista, CA, USA (“Complainant”) represented by Scott M. Hervey, of Weintraub Genshlea Chediak Sproul Law Corporation.  Respondent is DefaultData, Denver, CO, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <winchestercountryclub.com> and <winchestercc.com>, registered with TUCOWS, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Tyrus R. Atkinson, Jr., Timothy O’Leary and Jeffrey H. Kaufman, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 26, 2001; the Forum received a hard copy of the Complaint on May 1, 2001.

On April 30, 2001, TUCOWS, Inc. confirmed by e-mail to the Forum that the domain names <winchestercountryclub.com> and <winchestercc.com> are registered with TUCOWS, Inc. and that the Respondent is the current registrant of the name.  TUCOWS, Inc. has verified that Respondent is bound by the TUCOWS, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@winchestercountryclub.com and postmaster@winchestercc.com by e-mail.

A timely Response was received and determined to be complete on May 29, 2001.

A timely additional submission sent by Complainant was received and determined to be complete on June 5, 2001.

A timely additional submission sent by Respondent was received and determined to be complete on June 5, 2001.

On June 8, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., Timothy O’Leary and Jeffrey H. Kaufman, Panelists.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is Winchester Properties, LLC, a Delaware Limited Liability Company located in Meadow Vista, California.

Complainant is the developer of a 1,117 acre country club and residential community located in Placer County, California, named “Winchester Country Club.”

By mid 1997, Complainant, by and through its predecessor in interest, had engaged in open and notorious use of its mark WINCHESTER COUNTRY CLUB with respect to its country club services.  Complainant advertised in newspapers throughout California and in national magazines.

Complainant is the owner of United States Trademark Application for the mark WINCHESTER COUNTRY CLUB.

Complainant has a California registered service mark for the mark WINCHESTER COUNTRY CLUB.

The Domain Name WINCHESTERCOUNTRYCLUB.COM, now registered to Respondent, is identical to the word portion of Complainant’s California registered mark and is exactly the same as Complainant’s pending federal trademark registration application.  The Domain Name WINCHESTERCC.COM, also now registered to Respondent, is similar to Complainant’s service marks in that they share the first formative, “Winchester’ and “cc” is an abbreviated reference to the word “country club.”

Respondent’s registration of the Domain Names WINCHESTERCOUNTRY CLUB.COM and WINCHESTERCC.COM was done no earlier that than October 5, 1999.  Complainant acquired trademark rights in its mark as early as 1997, earlier than Respondent’s date of registration of the Domain Names.

Respondent has no legitimate right or interest in the Domain Names since it does not use the Domain Names in connection with a bona fide offering of goods or services, and it has not acquired any common law trademark rights in the Domain Names or marks similar thereto.

Respondent Brian Wick is the president of Respondent, American Distribution Systems, Inc.  Both Wick and ADSI do business as DefaultData.com and operate a web site located at the domain “nameisforsale.com”.  “Nameisforsale.com” is a web site where domain names are bought, sold or otherwise exchanged.  Respondent registered the Domain Names primarily for the purpose of selling, renting or otherwise transferring the Domain Names to Complainant or to a competitor of the Complainant. 

Respondent registered the Domain Names in bad faith.

Respondent has been involved as a respondent in several domain name dispute cases in which the issues are similar to the issues in this case.  Complainant contends that the decisions rendered in the cited cases illustrate a pattern of conduct by Respondent for registering a large number of domain names, which violate the trademark rights of others.           

B. Respondent

Respondent is Brian Wick, and his company  is called American Distribution Systems, Inc.(ADSI) d/b/a DefaultData.com d/b/a NameIsForSale.com collectively.

Brian Wick is a college graduate with a degree in Computer Science. 

Wick has worked as a computer programmer since 1983 and in 1996 entered into Internet programming and related activities.

Respondent registered the Domain Names  WINCHESTERCOUNTRYCLUB.COM on October 5, 1999.

Complainant did not use “Winchester Country Club” before July 24, 1999. It used the names “Winchester” and “Winchester Golf.”

On October 5, 1999, only 75 days after Complainant first used “Winchester Country Club” Respondent registered the Domain Name WINCHESTERCOUNTRY CLUB.COM.  On November 29, 1999, 55 days after Respondent registered the Domain Name, Complainant filed for a federal mark and the mark is not registered on the date of this proceeding.

“Winchester Country Club” is in common use.  There are two other “Winchester Country Club” golf courses in the United States in addition to Complainant’s “Winchester Country Club.”

“Winchester Country Club” is not a famous, strong, distinct or exclusive mark.

Respondent reserved WINCHESTERCOUNTRYCLUB.COM to be part of his “TownDrunk Parody Web Site Network” where he communicates free information about the “Establishment” using Internet Domains that “correspond” to the Establishment marks, like WINCHESTERCOUNTRYCLUB.COM just as “corresponding” marks are used in any other free speech publication.

A consumer protection advocate is allowed to “mess” with Corporate America by communicating free information about the Establishment in the form of parody using hundreds of Internet Domains corresponding to the Establishment’s marks, just as “corresponding” marks are used in any other free speech publication.

Respondent uses the Domain Name WINCHESTERCOUNTRYCLUB.COM as part of its parody web site.  Respondent has a right to free speech under the United States Constitution.  The level of success or validity of parody is not for the courts to decide. 

Respondent makes a non-commercial use of the Domain Names at issue.

Respondent has legitimate rights and interests in the Domain Names.

Respondent did not register the Domain Names in bad faith.

All of the prior decisions rendered against Respondent by other Panels and the United States District Court are flawed.

C. Additional Submissions

Complainant’s Additional Submission.

Complaint submits the Affidavit of Clinton Charles Myers who swears that in early October, 1997, it was decided that the golf course and country club within the Winchester subdivision would go by the name “Winchester Country Club” and that beginning no later than November, 1997, the golf course and its country club were referred to as the “Winchester Country Club” and was thereafter this name was used in all external and advertisements regarding the course and club.

Respondent’s Additional Submission.

Respondent contends that “source identification” cannot be associated with the Complainant’s mark nor anybody else’s mark

FINDINGS

1. Complainant is a Delaware Limited Liability Company located in Meadow Vista, California.

2. Respondent is Brian Wick, and his company is American Distribution Systems, Inc. d/b/a DefaultData.com d/b/a NameIsForSale.com, collectively.

3. Complainant is the developer of a residential community in Meadow Vista, California consisting of home sites and a golf club.  In 1997, Complainant called the development “Winchester” and “Winchester Country Club Estates.”  Beginning on or about July 24, 1999, Complainant began the open and notorious use of the term, “Winchester County Club” through advertising and by other means.

4. Respondent registered the Domain Name, WINCHESTERCOUNTRYCLUB.COM on October 5, 1999 and WINCHESTERCC.COM on August 8, 2000.

5. Complainant acquired common law trademark rights in the name “Winchester Country Club” no later than July, 1999.

6. Complainant has not acquired common law trademark rights in the name “Winchestercc” since no evidence was presented to show that Complainant used this name in connections with the development.

7. “Winchester Country Club” and “Winchestercc” are not the same for the purposes of this Decision. 

8. Though it is difficult to ascertain Respondent’s contentions because of the way in which they are presented in the Response, it can be ascertained that Respondent believes that he has a right to register and use a domain name identical with the mark of another and that the owner of the mark can do nothing to stop Respondent from using the mark as Respondent wishes to use it on the Internet.  This contention is rejected.  Respondent has no right to infringe on the marks of others at his own discretion.

9. Respondent’s contention that so long as he calls his use of a domain name a “parody site” he is immune from a claim by the owner of the mark, is rejected.  A “parody site” can be a legitimate free speech vehicle, but it cannot be used to violate the rights of the holder of a mark.

10. Respondent presented no evidence or explanation as to how he came to choose the Domain Names WINCHESTERCOUNTRYCLUB.COM and WINCHESTERCC.COM to register.

11. Respondent has registered a large number of domain names, many of which are identical to the trademarks of others.  Respondent has exhibited a pattern of conduct in registering domain names which are identical to the marks of others.

12. The names WINCHESTER COUNTRY CLUB, in which Complainant has common law rights, is identical with the Domain Name WINCHESTERCOUNTRYCLUB.COM, which is registered to Respondent.

13. Respondent has no rights or legitimate interests in the Domain Name WINCHESTER COUNTRYCLUB.COM.

14. Respondent has rights and legitimate interests in the Domain Name, WINCHESTERCC.COM.  Complainant cannot show rights and legitimate interests in WINCHESTERCC.COM.

15. Respondent registered and is using the Domain Name, WINCHESTERCOUNTRY CLUB.COM, in bad faith.

16. Respondent did not register or use the Domain Name, WINCHESTERCC.COM in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Domain Name WINCHESTERCOUNTRYCLUB.COM is identical to the word mark in which Complainant has common law rights and which Complainant states that it owns under the authority of a California registered mark and exactly the same as Complainant’s pending federal trademark application for the word mark WINCHESTER COUNTRY CLUB.  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2000) where it was found that the “mysticlake.net” is plainly identical to Complainat’s MYSTIC LAKE trademark and service mark.  Complainant’s contended common law rights in the name WINCHESTER COUNTRY CLUB are sufficient to show that Complainant has rights for the purposes of this paragraph requirement.

The Domain Name WINCHESTERCC.COM is similar to Complainant’s service mark in that they share the first formative; WINCHESTER and “cc” could be an abbreviated reference to the word “country club.”  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001). However, the word “Winchester” is not exclusively associated with Complainant.  See CRS Technology Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) that found that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.  See also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000, stating the “(S)erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim…”

WINCHESTERCC.COM does not correspond to the WINCHESTER COUNTRY CLUB mark.  WINCHESTERCC.COM could represent “Winchester Community Center”,  “Winchester Community Church”, “Winchester Cheese Company” or many such combinations.  Respondent has shown through the submission of exhibits that the word “Winchester” alone is used by entities other than Complainant.  Federal trademarks exist for the word “Winchester” alone and in conjunction with other words such as “Winchester Chicken”, “Winchester Capital”, “Winchester Ranger”, “Winchester Supreme”, “Winchester Industrial Products With Horse & Rider”. “Winchestersworth”, “Winchester Cartridge Series”, and so forth.   Common law rights are owned in the names “Winchester Cheese Company”, “Winchester Homes”, “Winchester Golf Club”, “Winchester Hills Golf Club”, and others.

The Panel is not convinced that WINCHESTERCC.COM must be taken to mean “Winchester Country Club”.  See ISL Marketing AG, and the Federation Int’l de Football Ass’n v. Chung et al, D2000-0034 (WIPO Apr. 3, 2000) where if was held that while one may argue that “wc” is an abbreviation of WORLD CUP, it is not likely the meaning most people would give to those letters.

WINCHESTERCOUNTRYCLUB.COM is identical to Complainant’s mark.  Complainant prevails on this issue.

WINCHESTERCC.COM is not identical or confusingly similar to Complainant’s mark, nor is it a mark in which Complainant can claim rights or interests.  Respondent prevails on this issue.

Rights or Legitimate Interests

Complainant contends that it is the owner of the mark contained in the domain name on common law grounds.  Complainant contends, though not stating it clearly, that this factual situation gives Complainant an exclusive right to use the mark.  See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).   Thus Respondent has no rights or legitimate interests in the mark “Winchester Country Club”.  It is clear that Respondent is not an agent or a licensee of Complainant. This can be inferred from the Record.  It can be inferred that Respondent has never been known as WINCHESTER COUNTRY CLUB prior to registration.

The Panel is constrained to state that the pleadings and exhibits of both Complainant and Respondent are far from complete or conclusive.  The paucity of the presentations by the parties causes this Panel concern and makes this case a close question when a fuller attention to the issues, to detail, and to the elements of proof required to be made by the Policy would certainly have been helpful to the Panel.  However, from Complainant’s showing and the inferences that can be drawn from the proof and lack of proof presented by the parties, the Panel concludes that Complainant has met its initial burden of proof.

As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name WINCHESTER COUNTRY CLUB, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).

Respondent accepts this burden by contending that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  Respondent contends that he is free to use the trademark of any owner, without limitation, so long as he operates a “parody” site for the criticism or denigration of the trademark owner as a result of Respondent’s right to freedom of speech.  If this can be satisfactorily established, Respondent and not Complainant will have prevailed on this issue.  See Policy, Sec. 4(c)(iii).

Respondent’s claim that he has unlimited rights under freedom of speech to violate the trademark rights of any holder of a mark so long as he calls his web-site a “parody site” has been rejected in every case in which this argument has been raised by Respondent in other domain name dispute cases involving Brian Wick or one of his organizations.  See Brandon Dunes, L.P. v. DefaultData.com, D2000-0431 (WIPO July 13, 2000); Morrison & Foerster, LLP v. Brian Wick and American Distributions Systems, Inc.(“ADSI”), FA 94301 (Nat. Arb. Forum Apr. 17, 2000); Strasburger & Price, LLP v. NameIsForSale.com, FA 94290 (Nat. Arb. Forum May 18, 2000); McKenna & Cuneo, L.L.P. v. NameIsForSale.com, FA 93677 (Nat. Arb. Forum Mar. 16, 2000); Hunton & Williams v. American Distribution Systems, Inc., D2000-0501 (WIPO Aug. 1, 2000); Morrison & Foerster L.L.P v. Brian Wick and American Distribution Systems, Inc., et al, 94 F.Supp. 2d 1125 (D.C. Colo. 2000).  This Panel rejects Respondent’s argument for the same reasons noted in the prior decisions.

This Panel will address Respondent’s second contention.  It is that Respondent, though not in possession of complete power to violate trademark rights as he sees fit, does have a more limited right under free speech principles to operate “parody” websites to criticize or denigrate corporate America by using trademarks of the entities Respondent elects to “mess” with, as Respondent characterizes his method of operation.

This is another in the line of cases regarding consumer free speech complaint sites.  There is a developing line of case law regarding such sites that attempt to define the limits to which a party may use the mark of another in a domain name to comment, criticize, disparage, or downplay the products or activities of another.  See Robo Enterprises, Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000); The New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000).

It is inappropriate to permit trademark owners to shut down sites that are aimed at criticism of the trademark holder because the content contained in the site is unfair, unwarranted, or untrue.  Trademark rights may be limited by First Amendment concerns.  See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).

It is beyond the scope of domain dispute cases to consider the issue of the boundaries of free speech generally and the manner and extent to which a trademark may be used fairly and without infringement.  See Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).

A distinction must be drawn between the domain name itself and the contents of the site which is reached through the domain name.  See Estee Lauder Inc. v. estelauder.com, esteelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).  A party may have First Amendment rights as to the content of the site, but that does not give the party an equal right to use the marks of another in the domain name.

The proper inquiry is whether Respondent has rights or legitimate interests in respect of the domain name WINCHESTER COUNTRY CLUB.  See Estee Lauder Inc. v. esteelauder.com, esteelauder.net and Jeff Hanna, supra.

A critical issue to be determined in cases of this kind is whether the domain name in question itself signifies critical purposes, or parody, as opposed to imitation of the trademark at issue.  See Wal Mart Stores, Inc. v. wallmarkcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000).

In the Wal Mart case, the Panel analyzed the holding in People for the Ethical Treatment of Animals v. Dougherty, 113 F.Supp 2^nd 915( D.C. Va. 2000) and other cases.  The Panel found that these cases required that a domain name for the purpose of parody or criticism must on its face make some indication that the site is not the site of the trademark holder but is instead a site for the criticism of the trademark holder.  A parody depends upon a lack of confusion to make its point and must convey two simultaneous and contradictory messages.  The first is that it refers to the original of which parody is made, but clearly is not the original.  Otherwise, there is likelihood of confusion as the sponsorship of the web site.  The user will not realize that he or she is at the wrong site until he or she reads through the site and discovers that the site is not the original site of the trademark holder but instead a web site for parody of the trademark holder.  There is created initial interest confusion, which is impermissible.

There is no indication in the Domain Name WINCHESTERCOUNTRY CLUB.COM that suggests that the site is one for parody of Complainant.

It was stated in The New York Times Co. v. New York Internet Services, as follows:  “Even if the site at newyorktimes.com were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name…even though NYIS may have the right to (1) establish a commentary or opinion site re The New York Times and (2) to mention The New York Times at the site and to reproduce the mark there, NYIS is not necessarily entitled to use the New York Times name or mark as part of NYIS’s address for such a website.  A domain name is not only an address it is a personal identifier.  Many addresses have been available to NYIS, which would not in any way impinge on the trademark rights of The New York Times.  NYIS consciously chose the domain name in issue to lead Internet users to the NYIS site…it is highly likely that such users intend to find an authorized site of The New York Times.”  The New York Times Co. v. New York Internet Services, D2000-1072 (WIPO Dec. 5, 2000).

“…Respondent may well, and likely does, have extensive rights of free speech to provide a platform to criticize Complainant and a right to the fair use of Complainant’s marks in so doing.  The contents of Respondent’s websites may also be a perfectly legitimate use of those rights.  But Respondent could well have chosen to use a domain name that was not confusingly similar to Complainant’s and/or in which Complainant had no rights… it intentionally chose not to do so…Respondent’s free expression rights do not here give it a right or legitimate interest in the domain name at issue.”  Estee Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

In a United States District Court case, where discovery was done, the Court characterized this Respondent’s conduct as follows:  “Mr. Wick’s own testimony demonstrates his bad faith.  He testified that he began registering ‘parody’ domain names to ‘get even’ with a company he worked for that allegedly reneged on a contract with him. (March 30, 2000 Trans. at p. 89).  When he had success in this limited field, he moved on to corporate America and, at one point, registered domain names for 7% of the Fortune 500 companies. (March 30, 2000 Trans. at p. 90).  He then graduated to corporate recreation activities such as golf. (March 30, 2000 Trans. at p. 92).  Finally, he began to register names of major law firms because they, in Mr. Wick’s view, would represent corporate America in court.”  Morrison & Foerster LLP v. Brian Wick and American Distribution Systems, Inc., 94 F.Supp 2^nd 1125, 1133 (D.C. Colo. 2000).

As part of Respondent’s attention to corporate recreation such as golf, he registered, on October 10, 1999, the domain name “brandondunes.com”.  Brandon Dunes Golf Course was officially opened May 2, 1999.  Respondent contended in that domain name proceeding that he registered the domain name to “exhibit parody”.  The Panel noted that nowhere in Mr. Wick’s declaration does he offer any reason for adopting the brandondunes.com domain name which is in anyway inconsistent with the fact that the domain name is associated with Brandon Dunes, the Complainant.

It must be inferred that when Mr. Wick registered WINCHESTERCOUNTRY CLUB.COM on October 5, 1999, such registration was part of his assault on corporate recreation and directed to Complainant.

The Panel in Brandon Dunes L.P. v. Default Data.com, D2000-0431 (WIPO July 13, 2000) held that even though Respondent stated that he intended to operate a “social and political satire” of the golf club that did not allow appropriation of the domain name.

That same ruling must be made in this case.  Under the citations made herein regarding “parody’ and “criticism” sites, including those applied directly against this Respondent in prior cases, and the facts and circumstances of the proof in this case, Respondent must be found to have no rights or legitimate interests in the Domain Name WINCHESTERCOUNTRYCLUB.COM.

On the other hand, Respondent must be found to have rights and legitimate interests in the Domain Name WINCHESTERCC.COM, since Complainant can establish no rights or interests to dispute Respondent’s claim.

Respondent may exercise his freedom of speech rights on a web site using the Domain Name WINCHESTERCC.COM.

Registration and Use in Bad Faith

It is unnecessary to address the bad faith issue as it relates to WINCHESTERCC.COM.  Complainant failed to carry its burden of proof of showing a lack of legitimate rights and interests on the part of Respondent as to this Domain Name.  Under the provisions of the Uniform Domain Name Dispute Resolution Policy, Respondent must be found to have prevailed as to his right to retain the Domain Name in this case.

Complainant has prevailed in the first two requirements of the Policy as to the Domain Name WINCHESTERCOUNTRYCLUB.COM.  It must bear the burden of showing the third element to prevail as to this Domain Name.

Complainant must show that the domain name WINCHESTERCOUNTRYCLUB.COM has been registered and is being used in bad faith. Uniform Domain Name Dispute Resolution Policy, Sec. 4(a)(iii).

Evidence of registration and use in bad faith can be shown by proof of circumstances, in particular but without limitation, of bad faith, by proof of any of the factors set out in the Policy at Section 4(b).

Complainant contends that there has been proven two of the circumstances set out in Section 4(b) of the Policy.  The first is that Respondent registered the Domain Name primarily for the purpose of selling it to Complainant.  The second is that Respondent registered the Domain Name for the purpose of preventing Complainant from reflecting the mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct.

Respondent contends that he has no plans to sell any of the numerous domain names he has registered, including the Domain Name WINCHESTERCOUNTRY CLUB.COM to Complainant or anyone else.  The evidence refutes this contention.  The inference can be drawn that the use of Respondent of the name “NameIsForSale.com” means that Respondent contemplates the sale of domain names at some time in the future.  See Morrison & Foerster LLP v. Brian Wick and American Distributions Systems, Inc. 94 F.Supp. 2^nd. 1125 (D.C. Colo. 2000) reaching the same inference.  Respondent’s contention is refuted by the factual finding that this Respondent refused to transfer the name “huntonandwillians.com” and “huntonwillians.com” to the law firm Hunton & Williams unless Hunton & Williams agreed to pay Respondent a sum in excess of the fees actually paid to the registrar. see Hunton & Williams v. American Distribution Systems, Inc. et al. D2000-0501 (WIPO Aug. 1, 2000).  Respondent’s contention is refuted by the holding of the United States District Court, litigating a matter quite similar to this case and involving Brian Wick, which stated as follows: “Although Mr. Wick testified he never intended to use these web sites for profit (March 30, 2000) Trans. at p. 93), his testimony is not credible in light of the nature of these webpages.  I find it more likely than not that, as Mr. Wick himself admits; he had not yet had an opportunity to pursue financial gain from these domain names because he was too busy litigating these and similar matters. (March 30, 2000 Trans at p. 96).” Morrison & Foerster LLP v. Brian Wick and American Distribution Systems, Inc., 94 F.Supp. 2^nd 1125, 1132 (D.C. Colo. 2000).

This Panel finds that Respondent registered the Domain Name WINCHESTERCOUNTRYCLUB.COM primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

The Panel finds that Respondent has exhibited a pattern of conduct for registering domain names to prevent the owner of the mark from reflecting the mark in a corresponding domain name.  The evidence shown in the cases in which Respondent has been a party clearly illustrate Respondent’s method of conduct in registering numerous domain names which contain the trademark or service mark of members of the “establishment” which prevents the owners of the marks from registering their mark in a domain name.  Respondent admits the conduct in discovery associated with Morrison & Foerster LLP v. Brian Wick and American Distribution Systems, Inc.

As part of this pattern of conduct, the close association of the dates of registration of the domain names of the golf course developments “Brandon Dunes” and “Winchester Country Club” together with Respondent’s failure to state how or why he chose to register these particular domain names, leads to the inference that Respondent registered the domain names to prevent the trademark holder from registering a domain name corresponding to their mark. The Panel finds that Complainant has shown bad faith registration and use of the Domain Name WINCHESTERCOUNTRYCLUB.COM under Section 4(b)(ii) of the Policy.

DECISION

IT IS THE DECISION AND ORDER OF THIS PANEL THAT THE DOMAIN NAME, WINCHESTERCOUNTRYCLUB.COM, NOW REGISTERED TO RESPONDENT, BE TRANSFERRED TO THE COMPLAINANT, WINCHESTER PROPERTIES, L.L.C. AND IT IS THE FURTHER DECISION AND ORDER OF THIS PANEL THAT THE DOMAIN NAME WINCHESTERCC.COM, NOW REGISTERED TO RESPONDENT, BE NOT TRANSFERRED TO COMPLAINANT, AND THAT COMPLAINANT’S COMPLAINT AS TO THE DOMAIN NAME WINCHESTERCC.COM IS HEREBY DISMISSED AND DENIED.

Tyrus R. Atkinson, Jr., Timothy O’Leary and Jeffrey H. Kaufman, Panelists

Dated: June 22, 2001

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